The Complainants are Banco Honda S.A. and Honda Motor Co. Ltd. of São Paulo, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
The Respondent is Maria Antonia of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2013. On September 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2013. On September 21, 2013, the legal representative of the company Westcom, s.r.o, identified by the Registrar as the Respondent’s technical contact, sent an email communication to the Center, confirming that the Respondent was one of its customers and that the website at the disputed domain name was blocked further to the receipt by email of the Notification of Complaint from the Center. As the technical administrator, Westcom, s.r.o claims absence of connection with the merits of the case. No further communications were filed with the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on October 11, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 18, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainants are Honda Motor Co. Ltd. and Banco Honda S.A.
The Complainant Honda Motor Co. Ltd. is a Japanese corporation primarily known as a manufacturer of automobiles, motorcycles and power products. Honda has been the world's largest motorcycle manufacturer and started its business activities in1948.
The Complainant Banco Honda S.A. is part of the Honda Motor Co. Ltd. business group. The Complainant Banco Honda offers financial services related to the selling of the Complainant Honda products in Brazil.
The Complainant Honda Motor Co. Ltd. holds several trademark registrations and trademark applications for the trademarks HONDA, BANCO HONDA and HONDA SERVIÇOS FINANCEIROS before the Brazilian Patent and Trademark Office (INPI) - Annex 4 to the Complaint.
The Complainant Honda Motor Co. Ltd. also owns trademark registrations and trademark application for the trademark HONDA worldwide, including, among others, registrations in the United States of America, Argentina, Bolivia, Chile, China, European Community, Japan, Paraguay, Uruguay and Mexico - Annex 5 to the Complaint.
The disputed domain name was registered on August 3, 2013. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant Honda Motor Co. Ltd. has rights. The ownership of a trademark to which the domain name is confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the Policy. It is clear that the disputed domain name reproduces the entirety of the mark HONDA, in which the Complainant Honda Motor Co. Ltd. holds rights, with the addition of the generic term “financeira”, which translates to “financial”. Several panels have held that the addition of generic terms is not sufficient to escape a finding of confusing similarity. Moreover, the use of a generic term related to the Complainants’ activities is more likely to increase the possibility of confusion among consumers.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants are required to just make out an initial prima facie case that the Respondent lacks rights or legitimate interests. The Respondent has no registration and/or application for the trademark FINANCEIRA HONDA before the Brazilian Patent and Trademark Office (INPI). The Complainants have no relationship whatsoever with the Respondent and have never authorized the Respondent to use the disputed domain name or any other domain name reproducing its trademark HONDA. The Respondent is not commonly known or identified by the expression “financeirahonda”. The Respondent does not make a legitimate use of the disputed domain name. At the time the Complaint was filed, the disputed domain name was being used to host a website supposedly offering competing services under the same mark in which the Complainant Honda Motor Co. Ltd. holds rights. The Respondent’s website displays false information, such as references that it belongs to the Complainant Banco Honda. The Respondent’s website also displays address and Brazilian tax numbers that do not belong to the Respondent, but to one of the companies of the Honda Group in Brazil (Administradora de Consórcio Nacional Honda Ltda.). The Respondent’s website has been linked with numerous complaints about fraud schemes in Brazil (Annexes 13 and 14 to the Complaint) and reproduces parts of the Complainants’ website (Annex 15 to the Complaint).
The disputed domain name was registered and is being used in bad faith. The Respondent’s website displays false information, has been linked with numerous complaints about fraud schemes in Brazil and reproduces parts of the Complainants’ website. When the Respondent registered the disputed domain name the Complainants had long been using the trademark HONDA to identify its products and services, including financial services. At the time the Complaint was filed the disputed domain name was being used to host a website supposedly offering competing services under the same mark in which the Complainant Honda Motor Co. Ltd. holds rights. The Complainants’ trademark HONDA is very famous worldwide, and specially in Brazil, where the Respondent lives. It is clear that the Respondent was aware of Complainants’ products and services under the trademark HONDA when it registered and began using the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant Honda Motor Co. Ltd. shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has no doubt that “financeirahonda” is a term directly connected with the Complainant’s Banco Honda activities in financing HONDA products in Brazil.
Annexes 4 and 5 to the Complaint show registrations and applications of HONDA trademarks by the Complainant Honda in Brazil and in several other countries since many decades.
The trademark HONDA is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainants’ trademark basically by the addition of the word “financeira” and the generic Top-Level Domain (gTLD) extension “.com”.
The addition of a generic term such as “financeira” (which means “financial services” in Portuguese) does not have any impact on the overall impression of the dominant part of the disputed domain name, HONDA, mainly considering that the Complainants also offer financial services related to the selling of its products.
It is also already well established that the addition of a gTLD extension such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainants’ trademark, and that the Complainants have satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants have not licensed nor authorized the use of their trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant has shown previous uses of the disputed domain name in order to commit frauds, delivering false information as to the real source of its website.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainants have proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (August 2013), the trademark HONDA was already tightly connected to the Complainants’ activities for decades.
The Complainants showed that the disputed domain name has recently been used to reproduce parts of the Complainants’ website and brands.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain name - could not have been aware of the Complainants’ trademark, as well as that that the use of the expression “financeirahonda” could be a mere coincidence.
Furthermore, there were complaints in Brazil that the Respondent has also used the disputed domain name in order to commit frauds, delivering false information as to the real source of its website. In doing so, the Respondent also creates a likelihood of confusion with the Complainants’ trademark and probably obtains revenue from this practice.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainants have also satisfied the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled.
Rodrigo Azevedo
Sole Panelist
Date: November 1, 2013
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